DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-2 are currently pending.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi (US 10151012).
With respect to Claim 1, teaches a seamless stainless steel pipe for oil industry components, in mass%, as follows (col. 1, ln. 15-47; col. 5, ln. 15 to col. 7, ln. 45):
Claim 1
Eguchi
C
≤ 0.015
0.005-0.05
Si
0.05-0.50
0.05-1.0
Mn
0.04-1.80
0.2-1.8
P
≤ 0.030
≤ 0.03
S
≤ 0.005
≤ 0.005
Cr
11.0-14.0
14-20
Ni
> 2.0 to 5.0
1.5-10
Mo
0.5 to < 1.8
1-5
Al
0.005-0.10
0.002-0.1
V
0.005-0.20
≤ 0.5
Nb
0.005-0.05
≤ 0.5
N
≤ 0.015
≤ 0.15
O
≤ 0.010
≤ 0.01
Fe
Balance and unavoidable impurities
Balance with unavoidable impurities
Compositional ranges including zero are interpreted as optional elements. Thus, Eguchi teaches a seamless stainless steel pipe with compositional ranges overlapping each of the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the stainless steel of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Eguchi teaches wherein the seamless stainless steel pipe has a yield strength of 758 MPa or more, meeting the claim limitation. (col. 1, ln. 15-22). The reference further teaches that the stainless steel had excellent corrosion resistance (see, e.g., col. 9, ln. 53-65), in particular, a corrosion rate of 0.127 mm/y or less, including examples below 0.100 mm/y (col. 17, ln. 35-50; Table 2-2) and teaches an absorbed energy measurement at -10°C of 30J or more and examples exceeding 100 J. (col. 13, ln. 40 to col. 14, ln. 18; Table 2-2).
Thus, Eguchi teaches a stainless steel and a seamless pipe made thereof, wherein the steel has a strength and corrosion rate meeting or overlapping the claimed ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Eguchi teaches an absorbed/impact exceeding the claimed value but measured at a different temperature, and is silent as to the specific amount of precipitated Nb and V as required by claimed 1. However, as Eguchi teaches a seamless stainless steel pipe with substantially overlapping composition, the same or overlapping properties including yield strength and corrosion rate, made by a substantially similar method, and drawn to high absorbed energy at low temperatures, it would necessarily be expected to result in the same properties, including the claimed absorbed energy and precipitate content/properties.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Finally, with respect to the preamble limitation “for oil wells,” this limitation is drawn to the intended use of the seamless stainless steel pipe. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, as Eguchi teaches a seamless stainless steel pipe and further teaches its applicability for oil industry components (see above), it is deemed to meet the instant limitation.
With respect to Claim 2, Eguchi teaches the optional addition of Cu: 3.5 mass% or less, W: 3 mass%, B: 0.01 mass% or less, Ca: 0.01 mass% or less, REM: 0.01 mass% or less, Zr: 0.2 mass% or less, overlapping the claimed range. (col. 7, ln. 4-30; col. 7, ln. 54 to col. 8, ln. 17). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (US 2023/0167522).
With respect to Claim 1, Zhang teaches a seamless stainless steel pipe for oil and gas production components, in mass%, as follows (para. 2, 7-42, 46-53):
Claim 1
Zhang
C
≤ 0.015
≤ 0.05
Si
0.05-0.50
0.1-0.2
Mn
0.04-1.80
0.2-1.0
P
≤ 0.030
≤ 0.03
S
≤ 0.005
≤ 0.01
Cr
11.0-14.0
11.0-14.0
Ni
> 2.0 to 5.0
4.0-6.0
Mo
0.5 to < 1.8
1.5-2.5
Al
0.005-0.10
0.01-0.04
V
0.005-0.20
0.03-0.2
Nb
0.005-0.05
0.01-0.1
N
≤ 0.015
0.001-0.10
O
≤ 0.010
≤ 0.004
Fe
Balance and unavoidable impurities
Balance with unavoidable impurities
Compositional ranges including zero are interpreted as optional elements. Thus, Zhang teaches a seamless stainless steel pipe with compositional ranges overlapping each of the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the stainless steel of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Zhang further teaches wherein the stainless steel has a yield strength of 862 MPa or more at room temperature, a corrosion rate of 0.125 mm/a or less (equivalent to the claimed mm/y), and an impact energy at -20°C greater than 140 J, and teaches the precipitation of compounds containing vanadium and niobium. (para. 24, 41-43). Thus, Zhang teaches a stainless steel and a seamless pipe made thereof, wherein the steel has a strength and corrosion rate meeting or exceeding the claimed ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Zhang teaches an absorbed/impact energy exceeding the claimed value but measured at a different temperature, and is silent as to the specific amount of precipitated Nb and V as required by claimed 1. However, as Zhang teaches a seamless stainless steel pipe with substantially overlapping composition, the same or overlapping properties including yield strength and corrosion rate, comprising V and Nb containing precipitates, and drawn to high absorbed energy at low temperatures, it would necessarily be expected to result in the same properties, including the claimed absorbed energy and precipitate content/properties.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Finally, with respect to the preamble limitation “for oil wells,” this limitation is drawn to the intended use of the seamless stainless steel pipe. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, as Zhang teaches a seamless stainless steel pipe and further teaches its applicability for oil industry components (see above), it is deemed to meet the instant limitation.
With respect to Claim 2, Zhang teaches the optional addition of 0.2 mass% of one or more of Ti, Zr, and rare earths, such that the total is 0.3 mass% or less, overlapping the claimed range. (para. 27). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10151012. Although the claims at issue are not identical, they are not patentably distinct from each other because: as detailed in the 103 rejection above (incorporated here by reference), the related patent is drawn to a stainless steel pipe with substantially overlapping composition, and properties including absorbed energy and corrosion resistance. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2024/0401722 drawn to stainless steel pipe having overlapping compositional ranges and yield strength.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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